[Congressional Record Volume 144, Number 7 (Thursday, February 5, 1998)]
[Extensions of Remarks]
[Page E117]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




   THE INTRODUCTION OF H.R. 3136, THE ``TRADE DRESS PROTECTION ACT''

                                 ______
                                 

                           HON. HOWARD COBLE

                           of north carolina

                    in the house of representatives

                       Thursday, February 5, 1998

  Mr. COBLE. Mr. Speaker, I am pleased to introduce today the ``Trade 
Dress Protection Act.'' This bill is intended to clarify the law with 
respect to the applicable legal standards for the protection of trade 
dress, which includes product designs and packaging.
  Several years ago, Mr. Speaker, the Supreme Court, in the case Two 
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), held that trade 
dress which is inherently distinctive is protectable under federal 
trademark law without a showing that it has acquired secondary meaning. 
The Court, however, had no occasion to comment on the test that should 
be applied in determining whether trade dress is inherently 
distinctive.
  Subsequent to the Court's decision in Two Pesos, a number of federal 
courts of appeals have issued conflicting and confusing opinions 
regarding the showing necessary to establish if trade dress is 
inherently distinctive. My bill is intended to provide the courts, as 
well as the U.S. Patent and Trademark Office, with guidance as to the 
relevant factors to consider in determining whether or not product 
designs or packaging are inherently distinctive. It has been drafted in 
conjunction with the Administration to make the registrability and 
protection of trade dress as efficient as possible for both the 
applicant and the examiner.
  The ``Trade Dress Protection Act'' addresses a number of other issues 
as well. Under U.S. trademark law, trade dress is not subject to 
protection if it is functional. However, the Trademark Act does not 
define the term ``functional'' and some courts still rely on widely 
discredited tests; for example, whether the trade dress in issue is an 
important ingredient to the commercial success of the product. My bill, 
Mr. Speaker, attempts to define the term ``functional'' in a manner 
consistent with prevailing case law and provides the courts and the PTO 
with a number of factors to consider when engaging in a functionality 
analysis.
  The ``Trade Dress Protection Act'' also clarifies the law with 
respect to which party to a lawsuit bears the burden of proof on the 
issue of functionality. This issue has provoked a sharp split among the 
federal courts of appeals.
  My bill also provides the PTO with a new statutory basis upon which 
it may refuse to register matter that, as a whole, is functional. The 
number of applications seeking registration of trade dress has 
increased markedly over the past few years, and my bill updates the 
Trademark Act to provide the PTO with the statutory tools necessary for 
it to carry out its mission.
  Finally, my bill contains a number of technical amendments to the 
Trademark Act to correct drafting and other errors.
  Due to the importance of the issues raised by this bill, the House 
Subcommittee on Courts and Intellectual Property, which I chair, will 
hold a hearing on the measure on February 12. My colleagues and I look 
forward to hearing the testimony of the scheduled witnesses and to 
advancing this legislation this session.

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